Trade dress, like a trademark, identifies the source of goods or services. It can encompass characteristics such as a product’s design, shape, color or packaging, or a distinctive building design or décor. The hourglass Coke bottle, for example.

Or McDonald’s interior. If you were blindfolded and taken into a restaurant, upon opening your eyes you would immediately know you were in a McDonald’s based on the distinctive layout of the restaurant and the décor—as a consumer, you have come to learn that the look of that restaurant is only associated with one source, McDonald’s.

Just as with word or design marks, trade dress can be registered with the United States Patent and Trademark Office. It can also remain unregistered and be protected under the Lanham Act and state law as a common law trademark.

A plaintiff asserting a claim for trade dress infringement must plead and prove the following elements:

  • Plaintiff owns protectable trade dress in a clearly articulated design or combination of elements that is either inherently distinctive or has acquired distinctiveness through secondary meaning.
  • The accused trade dress creates a likelihood of confusion as to source, or as to sponsorship, affiliation or connection.
  • If the trade dress is not registered, the plaintiff must prove that the trade dress is not functional. If the trade dress is registered, there is a presumption of non-functionality and the burden of showing functionality is on the accused defendant.

A 2017 case from the Seventh Circuit provides a useful discussion of the third element—the functionality doctrine. Arlington Specialties, Inc. v. Urban Aid, Inc., 847 F.3d 415 (7th Cir. 2017).

This doctrine was created to prohibit one manufacturer from gaining an ongoing advantage over its competitors by monopolizing a useful design feature under the guise of protectable trade dress. Remember, as we discussed in our blog post published last week, Losing Trademark Rights by Abandonment, trademark (or trade dress) protection will last as long as the product is used in commerce—unlike patent or copyright protections that come with set time limits. Without the doctrine of functionality, a company could protect its trade dress by prohibiting competitors from using that same useful design for as long as the company keeps manufacturing the item, in essence, replacing the short duration of patent protection with the unlimited duration of trade dress, or trademark, protection. The United States Supreme Court explained, “The Lanham Act does not exist to reward manufacturers for their innovation in creating a particular device; that is the purpose of the patent law and its [limited] period of exclusivity.” TrafFix Devices, Inc. v. Marketing Displays, Inc., 532 U.S. 23 (2001).

For this reason, if a design is functional, meaning a feature is essential to the use or purpose of the product, or the feature affects the cost or quality of the product, it is not considered protected trade dress. The test for determining whether a design is functional has changed over time and a full description of those changes will take another blog to cover. However, most recently in Arlington Specialties, Inc., the Seventh Circuit focused on whether the design features at issue “affect the cost or quality of the device.” If they do, the design is functional and not protected trade dress.

The Arlington plaintiff made personal care kits—small bags containing products like hairspray, stain remover, and deodorant. The kits came in bags modeled after a Dopp Kit.

Defendant also made personal care kits. It was asked to design a special kit for a shoe distributor. The shoe distributor asked defendant to model the packaging on plaintiff’s packaging, and even sent the distributor a picture of plaintiff’s bag. Plaintiffs’ bag appears on the left below, and defendant’s bag appears on the right.

Once defendant’s kits were on the market, plaintiff filed suit arguing that the shape and design of its own bag constituted protected (unregistered) trade dress.

Defendant moved for summary judgment on the grounds that the claimed trade dress was functional, and not protected as a matter of law.

Plaintiff identified five elements in its claimed trade dress: (1) the bag’s cuboidal shape; (2) the bag’s softness; (3) the zipper’s location on the bag; (4) the folded and tucked corners; and (5) the seam halfway up the bag’s sides.

Plaintiff submitted a declaration explaining that the softness or rigidity of the bag effects how susceptible it is to puncture or deformation, and how different bag shapes influence cost and determine what types of handbags the kit can be placed inside.

The trial court determined that the founder’s declaration constituted undisputed evidence that the bag’s design and shape were functional as a matter of law. According to her declaration, the claimed design features affected product cost and quality. Summary judgment was entered in favor of the defendant and affirmed by the Seventh Circuit.

HINT: Be careful what you say in declarations.

Plaintiff tried to save its case by arguing that these design choices were made for their aesthetic appeal, not for their functional qualities, and that in fact other choices could have made the bags even more functional and effective. The Seventh Circuit rejected this argument, noting that better designs may exist in the world, but that does not negate the fact that this bag’s design and shape are functional. Moreover, the court noted, to sanction that type of argument would lead companies to criticize the functionality of their own products in an effort to preserve trade dress protections—an absurd result.

If you are thinking about launching a new product, registering trade dress with the USPTO, or you find yourself on either side of a trade dress infringement suit, contact AGT to discuss the best way forward. Please call Elizabeth Harlan at 410-783-3528 (, Jim Astrachan at 410 783-3550 (, or Donna Thomas at 410-783-3522 (